USPTO Patents Application 09922818

REMARKS

Claims 1-24 are all the claims pending in the application. Claims 1, 8, 9, 21, and 24 are
currently amended. Claims 14-20 have been cancelled without prejudice. Claims 25 and 26 are
newly submitted. Support for the amendments and new claims may be found in the specification
as originally submitted.

Claims 1, 3-9, and 11-19, 21, and 23-24 stand rejected under 35 U.S.C. §103(a) as being
unpatentable over Skelley (U.S. 6,795,638) in view of newly cited Middleton (U.S. Pub.
2002/01 18300). Claims 2, 10, and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Skelley in view of Middleton and Escobar (U.S. 5,659,793). Applicant
respectfully traverses these rejections, and requests reconsideration and allowance of the pending
claims in view of the following arguments.

Rejection under 35 USC 103(a) as being unpatentable over Skelley in view of newly
cited Middleton

Claims 1, 3-9, and 11-19, 21, and 23-24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Skelley in view of newly cited Middleton. Claims 14-19 have been cancelled,
therefore, the rejection is moot.

As amended, claim 1 recites a method for "editing digital broadcasting material in a
digital broadcast receiver comprising a recording medium" by "clipping segments from the
digital broadcasting material consisting of program segments and being recorded in the recording
medium in a stream type."

Col. 5 lines 51-55 of Skelley disclose that "Upon completion of the operator's selection of
clips and events (by monitoring video cassette tape 140, the live performance or a broadcast of

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the performance), the event database for the performance is created." (Emphasis added). Col. 6
lines 21-34 of Skelley disclose " a live performance, or a source recording of a live performance,
is viewed by an operator , and, using system 101, the selected events of the performance are
identified and characterized. In step 230, the database of events, and the clips on the source
recording, are reviewed, edited and sorted into a preferred sequence. In doing so, the operator
may modify the length of each clip and add additional information for the corresponding event
into the event database. In step 240, the selected sequence of clips, and selected information from
the event database associated with the clips, are recorded onto the target recording." (Emphasis
added).

Applicant submits that the passages discussed above explicitly state that an operator
selects clips from a video cassette tape, a live performance, or a broadcast of a performance. The
clips selected by the operator are then recorded onto the target recording. Applicant submits that
selecting clips from a video cassette tape, live performance, or a broadcast of a performance and
then recording the clips onto a target recording is patently distinct from "editing digital
broadcasting material in a digital broadcast receiver comprising a recording medium"
by "clipping segments from the digital broadcasting material consisting of program segments and
being recorded in the recording medium in a stream type," as recited in amended claim 1 .
Skelley discloses a method of recording from one medium to a different target medium.
Recording from one medium to a different target medium is not the same as viewing a broadcast
recorded on a recording medium and recording the selected clips in the same recording medium
as recited in amended claim 1. Therefore, Skelley cannot teach or suggest a method of "editing a
digital broadcasting material in a digital broadcast receiver comprising a recording medium," by
"clipping segments from the digital broadcasting material consisting of program segments and
being recorded in the recording medium in a stream type," as recited in amended claim 1.

Furthermore, as amended, claim 1 recites selecting some of the recorded programs, and
merging the selected programs into a new program in the recording medium using start points
and end points . As mentioned above, Skelley discloses recording from one medium to a different
target medium. However, claim 1 recites that a program recorded on the recording medium is
merged into a new program in "the recording medium using start points and end points." As such,

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Skelley also fails to teach or suggest "selecting some of the recorded programs, and merging the
selected programs into a new program in the recording medium using start points and end
points," as recited in amended claim 1 .

Additionally, page 5 of the Office Action states that "in the same field of endeavor
Middleton discloses a method of viewing a sequence of media clips. Middleton discloses
creating a new programme from the clips stored in the memory (see page 1 paragraphs 0006-
0007). Therefore in light of the teaching in Middleton it is obvious to one of ordinary skill in the
art to modify Skelly by further creating a new program from the recorded clips in order to
playback the programme of clips without discontinuities." Applicant respectfully disagrees.

Paragraph 0023 of Middleton discloses that "the program of the present invention
typically operates in one of the many available internet browsers loaded onto a local machine
connected to a computer network. This network may be a simple LAN, an intranetwork, a WAN
or more generally the internet as a whole as this provides the local user with access to a vast
number of media clips."

Applicant respectfully submits that prior art references in combination do not make an
invention obvious unless something in the prior art references would suggest the advantage to be
derived from combining the teachings." In re Sernaker , 217 USPQ 1, 6 (Fed. Cir. 1983).
Further, it is well settled that the mere fact that references can be combined or modified does not
render the resultant combination obvious unless the prior art also suggests the desirability of the
combination. In re Mills , 916 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990). Since obviousness
may not be established by hindsight reconstruction or conjecture, Applicant invites the Examiner
to point out the alleged motivation to combine with specificity, 1 or alternatively provide a
reference or affidavit in support thereof pursuant to MPEP §21 44.03. 2

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It is respectfully submitted that the cited prior art references cannot be combined
to teach the claimed invention. Further, even if one is modified in accordance to the
teaching of the other, the resultant modification would be an impractical or inoperable
combination. For example, Middleton is intended for use on an internet browser on a machine
connected to a computer network where the files are stored. On the other hand, Skelley is
intended for use on a program which is independent of an internet browser, for files stored on a
local machine.

Applicant submits that there is no indication in the Office Action, how such
combination is possible, as the two systems are independently complex and cannot be
easily modified to work with each other. As such, no portions of the cited references
provide a suggestion or motivation for combining the references in a manner that would
make the invention as recited in claims 1, 3-9, and 1 1-19, 21, and 23-24 obvious. Therefore, it
is respectfully submitted that the combination of Skelley and Middleton is improper.

For the above reasons, the invention as recited in the amended claim 1 is
distinguishable over the references cited by the Examiner. Independent claims 8, 21, and
24 recite elements similar to independent claim 1. Specifically, claims 8, 21, and 24 recite
"recording" and editing by "clipping" and "merging" the digital signal in the same
storage medium. Therefore claims 1 8, 14, 21, and 24 should be in condition for
allowance. Claims 3-7, and 9-13, respectively depend on claims 1, 8, and 21, and should
also be in condition for allowance by the virtue of their dependence on an allowable base
claim.

1 ACS Hospital Systems, Inc. v. Monteftore Hospital 221 U.S.P.Q. 929, 933 (Fed. Cir. 1984).

2 "The rationale supporting an obviousness rejection may be based on common knowledge in the art or "well-known" prior art . . , If the
applicant traverses such an assertion the examiner should cite a reference in support of his or her position. When a rejection is based on facts
within the personal knowledge of the examiner ... the facts must be supported, when called for by the applicant, by an affidavit from the

Attorney Docket No. 2080-3-31

Finally, newly submitted claims 25 and 26 also recite elements similar to claim 1.
Specifically claims 25 and 26 recites "storing" and "editing" the digital signal in the same
"storage medium." Therefore, claims 25 and 26 would be allowable over the cited
references.

Rejection under 35 U.S.C. §103(a) as being unpatentable over Skelley in view of Middleton
and Escobar

Claims 2, 10, and 20 stand rejected under 35 U.S.C. §103 (a) as being unpatentable over
Skelley in view of Middleton and Escobar. Claim 20 has been cancelled, therefore, the rejection
is moot.

Applicant has demonstrated above that Skelley does not teach or suggest various features
recited in claims 1 and 8. Applicant has further demonstrated that there is no motivation to
combine Middleton and Skelley. Applicant further submits that Escobar does not supply any of
the deficiencies of Skelley with respect to "editing digital broadcasting material in a digital
broadcast receiver comprising a recording medium," by "clipping segments from the digital
broadcasting material consisting of program segments and being recorded in the recording
medium in a stream type," as recited in amended claim 1 . Therefore, for the reasons presented
above, even if one skilled in the art were to combine the teachings of Skelley in view of
Middleton and Escobar in the manner asserted, claim 2 and 10 should be allowable at least by
virtue of its dependency upon allowable independent claims 1 and 8.

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CONCLUSION

In light of the above remarks, Applicant submits that the present Response places all
claims of the present application in condition for allowance. Reconsideration of the application
is requested.

If for any reason the Examiner finds the application other than in condition for allowance,
the Examiner is requested to call the undersigned attorney at the Los Angeles, California,
telephone number (213) 623-2221 to discuss the steps necessary for placing the application in
condition for allowance.

Respectfully submitted,

Lee. Hong. Degerman. Kang & Schmadeka

Date: March 12, 2008

Customer No. 035884

Richard Salfelder
Registration No. 5 1 , 1 27
Attorney for Applicant

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